TTAB Posts May 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled three (III) oral hearings for the month of May, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


May 4, 2016 - 2 PM: In re North Carolina Lottery, Serial No. 86044041 [Section 2(e)(1) mere descriptiveness refusal of FIRST TUESDAY for "lottery cards; Scratch cards for playing lottery game" and "lottery services"].

May 5, 2016 - 2 PM: Tequila Holdings, Inc. v. Basha Holdings, LLC, Opposition No. 91207397 [Section 2(d) opposition to registration of QUI for "alcoholic beverages, namely, distilled spirits" in view of the registered mark PAQUI for distilled spirits].

May 26, 2016 - 2 PM: DinaDiCenso, Eight of Swords, LLC v. Dave Wallin, Opposition No.91208299 [Opposition to registration of EIGHT OF SWORDS TATTOO & Design for "Body piercing services; Cosmetic tattooing services; Providing medical information and news about body art, namely, piercing, tattoos, scarification, subincision, castration through photos and videos; Tattoo parlors; Tattoo studios; Tattooing; Tattooing services" [TATTOO disclaimed], on the grounds of lack of ownership and fraud].

Read comments and post your comment here.

TTABlog note: "castration through photos and video"? I would call it "photochopping."

Text Copyright John L. Welch 2016.

Precedential No. 12: TTAB Affirms 2(e)(1) and 2(d) Refusals of HOUSEBOAT BLOB for Inflatable Mattresses

The Board affirmed two refusals of the mark HOUSEBOAT BLOB for "Inflatable float mattresses or pads for recreational use, namely, mattresses and pads from which the user may be launched into the air and onto a body of water; Inflatable mattresses for recreational use, namely, mattresses from which the user may be launched into the air and onto a body of water" [BLOB disclaimed]. It found the mark merely descriptive under Section 2(e)(1), and likely to cause confusion with the registered mark THE BLOB for goods legally identical to applicant's goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016) [precedential].

Mere Descriptiveness: The record evidence established that the term "blob" refers to a type of air mattress used on bodies of water as a recreational device whereby one is catapulted off the blob when another person jumps onto the other side of the blob. The question was whether the mark HOUSEBOAT BLOB, as a whole, is merely descriptive of the goods.

Applicant anachronistically argued that the Board should apply the degree of imagination test, the competitors' use test, and the competitors' need test, relying on No Nonsense Fashions, a 1985 TTAB decision. The Board, however, pointed out that No Nonsense has been superseded by subsequent CAFC and Board rulings.

Under the current standard, there is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1). The correct test is whether the phrase forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.

Applicant's own marketing materials described a version of its product "that will accommodate House Boats and Yachts." The Amazon web page for applicant's product described it as "perfect to attach to a houseboat or small cliff ...."

Considering the mark as a whole, the Board concluded that the words in combination "would be immediately understood to mean a blob-type inflatable launch pad that is specialized for use in association with a houseboat." Thus, the mark conveys an immediate idea of the nature and purpose of the goods, and the Board found the mark to be merely descriptive of the goods.

Likelihood of confusion:  Applicant argued that the cited mark THE BLOB is a double-entendre that "uses the fame of the movie 'The Blob' ... and the descriptive/generic meaning of 'blob.'" However, there was no evidence of record to establish that Registrant promoted its goods with a reference to the film, but even if the cited mark has a double entendre that applicant's mark does not, "in light of the evidence and the description of the goods for the mark THE BLOB, it is much more likely that customers would perceive it to mean an inflatable, floating launch pad." Similarly, consumers would perceive HOUSEBOAT BLOB to be a special type of inflatable launch pad for use with a houseboat.

Applicant argued that the term "blob" in the cited registration has little or no source identifying significance, but the Board, in light of the presumption to which the registration is entitled, refused to consider the contention that the cited mark has no distinctiveness or is generic. On the other hand, in light of the "usage evidence bearing on the public's understanding of the term BLOB," the Board found the mark to be a weak source indicator.

Even so, we see little in Applicant’s mark to distinguish it from Registrant’s mark, as Applicant’s mark merely adds a highly descriptive term to the registered mark, in such a way as to indicate to customers a suitable purpose of the goods. And although the registered mark includes the word “THE,” which is absent from Applicant’s mark, the presence or absence of this word is unlikely to allow consumers to meaningfully distinguish the marks, because we cannot find on the evidence of record that consumers would associate the trademark THE BLOB, as used on these goods, with the classic movie.

The goods of the application and cited registration are legally identical in part (although the goods of the cited registration are limited to use by youth camps, church camps, campgrounds, and other outdoor recreation businesses), and they therefore presumably travel in the same, normal channels of trade to the same classes of consumers.

Considering the evidence and the relevant duPont factors, the Board found confusion likely and it therefore affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment:  The opinion includes a brief discussion of "incontestable" registrations and their import in the likelihood of confusion analysis. It pointed out that a mark is not considered stronger because its registration is "incontestable" (i.e., more than five years old). "The registrations alone are incompetent to establish any facts with regard to ... any reputation [the registered marks] enjoy or what purchasers' reactions to them may be." 

BTW: I continue to assert that there is no such thing as an "incontestable" registration. Section 15 refers to the right to exclusive use of a mark becoming incontestable, but registrations can always be contested on certain grounds, like fraud and abandonment. So to call a registration incontestable is, I think, misleading and inappropriate.

Text Copyright John L. Welch 2016.

Pro-Football Seeks Certiorari-Before-Judgment in REDSKINS Appeal

On April 25th, Pro-Football, Inc. filed a Petition for Writ of Certiorari Before Judgment (pdf here), in the REDKSINS case now pending before the U.S. Court of Appeals for the Fourth Circuit, asking the Supreme Court to consider immediately the issue of the constitutionality of Section 2(a)'s disparagement clause. Pro-Football argues that the Supreme Court should either deny certiorari in the SLANTS case, or consider the REDSKINS case in tandem with In re Tam.

According to Pro-Football, the REDSKINS case is an "essential and invaluable complement to Tam:

Assuming the Court grants review in Tam, this case is the paradigmatic candidate for certiorari before judgment because it is a necessary and ideal companion to Tam. The Court often has granted certiorari before judgment to consider complementary companion cases together, especially when the two cases raised important questions of constitutional law. Granting certiorari before judgment allows the Court to consider the question presented in a wider range of circumstances, resolve intertwined, equally important questions, and avoid piecemeal review. All of that is true here.

As in other cert-before-judgment cases, this case would allow the Court to consider Tam’s First Amendment question in the full range of circumstances, including both initial denials of registration and after-the-fact cancellations. The cancellation context here not only rounds out the scenarios in which § 2(a) applies, but also poses the gravest threat to free speech and is by far the most constitutionally suspect. Thus, even were the government to prevail in Tam, this Court’s decision likely would not govern the cancellation context.

Read comments and post your comment here.

TTABlog comment: I hope the Supremes take both cases.

Text Copyright John L. Welch 2016.

TTAB Test: Is BLACK BARK for Restaurant Services Confusable with BLACK BARK BRISKET for Meat?

Last week we had olive oil and restaurant services. Now it's restaurant services and beef. The USPTO refused registration of the mark BLACK BARK for restaurant services, finding it likely to cause confusion with the registered mark BLACK BARK BRISKET for "Meat; Prepared meat." The marks are similar, but are the goods and services related? How do you think this came out? In re DLMW-BBQ, LLC, Serial No. 86457938 (April 25, 2016) [not precedential].

The marks: The Board found the marks to be substantially similar in appearance and sound. As to meaning, in the field of barbecued meats, "BARK is understood to mean the desirable crust that develops on meat that has been properly cooked." "Bark" may be black in color, and in fact that color is desirable to some.

In overall commercial impression, Registrant’s mark, as applied to meat, describes a brisket meat that is cooked or barbecued in such a way that it has a black-colored crust; and Applicant’s mark, as applied to restaurant services suggests the availability of meat that is cooked or barbecued so as to have a black-colored crust. We find these commercial impressions to be similar, although not identical.

The Board found that the first du Pont factor, the similarity or dissimilarity of the marks weighed in favor of a finding of likelihood of confusion.

Goods/Services: "To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (CCPA 1982).

In an attempt to show relatedness, the Examining Attorney submitted several website excerpts from restaurants or food trucks that specialize in barbecue and offered meat by the pound, as well as six third-party registrations covering restaurant services and meat products. Only two of the websites excerpts were probative.

The Board, however, wanted to see the "something more." It noted that the cited mark is a relatively weak source indicator for most products because of its descriptiveness, and it found the two websites and the relatively small number of registrations to be insufficient under the "something more" standard.

The Board concluded that the USPTO failed to prove that confusion is likely, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog comment: I'm surprised the PTO couldn't come up with more websites and registrations to support the refusal. Why was the evidence limited to barbecue restaurants?

Text Copyright John L. Welch 2016.

TTAB Reverses 2(d) Refusal of FAVORIT (Stylized) For Bike Parts and Toys

There haven't been many 2(d) reversals lately, but here's one. The Board overturned a refusal to register FAVORIT in the stylized form shown below, for bicycles, bicycle parts, games, toys, and cycling-related sporting goods, finding the mark not likely to cause confusion with the mark FAVORITES, registered for "mail order catalogs featuring jewelry, hardware, sporting goods, toys and games, food and home furnishings, ...." The weakness of the mark FAVORITES and the differences in the involved goods and services brought turned the tide in applicant's favor.  In re Favorit Czechoslovakia s.r.o., Serial No. 79133133 (April 22, 2016) [not precedential].

The marks: The Board wasted little time in finding the marks to be similar in appearance, sound, connotation, and commercial impression. However, twenty third-party registrations and uses of the terms "favorite" or "favorites" in connection with sporting goods, toys, games,and retail store services selling toys or bicycles convinced the Board that FAVORITES is a "weak source indicator for sporting goods and toys."

That is, the word "favorite" may be considered laudatory, and therefore conceptually weak, inasmuch as "favorite" is defined as "a person or a thing that is liked more than others."

Therefore, this duPont factor (the strength of the mark) weighed against a finding of likely confusion.

Goods/Services: The examining attorney argued that catalogs and the goods contained therein are of a kind that may emanate from a single source under the same mark. She also relied on ten third-party registrations to show the relatedness of applicant's goods and the goods that are listed in connection with the catalogs of the cited registration. However, none of these third-party registrations showed use of the same mark on mail order catalogs and cycling-related sporting goods or on toys and games. Thus these registrations failed to show a connection between applicant's goods and registrant's goods.

Channels of Trade: As to channels of trade, the examining attorney asserted that applicant's goods fall within the broad wording of "sporting goods" or "toys and games" and therefore are closely related and presumably travel in the same channels of trade. Not so fast, said the Board. The goods in the cited registration are mail order catalogs and therefore registrant's channels of trade "do not include, for example, retail stores, the channels of trade in which applicant's goods are likely to be sold." Nor could the Board assume that applicant's goods would be sold through registrant's catalogs. Therefore, the Board concluded that the PTO had failed to show the channels of trade were the same for applicant's and registrant's goods.

The Board concluded that confusion was not likely, and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did the FAVORITES registration issue without a required showing of acquired distinctiveness?

Text Copyright John L. Welch 2016.

BOOKING.COM Files Complaint for District Court Review of TTAB Genericness Ruling

Booking.com, B.V. has filed a complaint (here) in the U.S. District Court for the Eastern District of Virginia, seeking review, under Lanham Act Section 1071, of the TTAB's decision [TTABlogged here] deeming the term BOOKING.COM to be generic for travel agency services.

At paragraph 43 of the complaint, Booking.com states that "a recent survey (conducted after the TTAB decision) demonstrates that 75% of consumers recognize BOOKING.COM as a trademark, not a common name." Since a Section 1071 review provides a trial de novo, this new evidence may have a significant effect on the outcome.

Read comments and post your comment here.

TTABlog comment: If I knew a bookie, I would bet on a reversal.

Text Copyright John L. Welch 2016.

Finding BAJATUSEGURO.COM a Double Entendre, TTAB Reverses 2(e)(1) Refusal

The USPTO refused registration of the mark BAJATUSEGURO.COM, in standard character form, for "insurance brokerage and reinsurance underwriting services offered via a global computer network," deeming the mark merely descriptive under Section 2(e)(1). The examining attorney also required a disclaimer of that term in the word + design mark shown below. The Board, however, found that BAJATUSEGURO.COM is a double entendre, one of the meanings being not descriptive but incongruous, and so it reversed the refusal. In re Salvador Cababie, Serial Nos. 86265910 and 86265949 (April 14, 2016) [not precedential].

There was no dispute that the words of the marks are in Spanish, or that the ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The crux of the dispute was the meaning of BAJATUSEGURO to Spanish speakers.

The examining attorney submitted a Translation Statement prepared by the USPTO: "The English translation of the non-English wording in the mark is 'lower your insurance.'" He also submitted several online translations of "baja tu seguro" as "lower your insurance."

Applicant argued that the phrase "baja tu seguro," when combined with the top level domain ".com," takes on the meaning of "download your insurance." He submitted a declaration from his Mexican attorney to support that assertion. One exhibit to her declaration was a definition from a dictionary of Internet terms, stating that "bajar" means to download something from the Internet. A Google search revealed a definition that corroborated that meaning, and another exhibit translated "bajar musica" as "download music."

There was no dispute that "lower your insurance" is descriptive of applicant's services. The Board accepted the USPTO translation of BAJA TU SEGURO as "lower your insurance," and observed that the mark BAJATUSEGURO.COM would have that meaning to many consumers.

On the other hand, the translation submitted by applicant was sufficient for the Board to find that, "at least to an appreciable number of consumers, the mark would have the meaning of 'download your insurance.'"

Therefore, the question was whether  BAJATUSEGURO.COM is a double entendre, with one meaning being descriptive and the other not. "Double entendres, of course, are registrable because they are not merely descriptive."

During examination of the subject applications, the examining attorney did not submit evidence regarding the descriptiveness of "download your insurance," and in fact asserted that the phrase would be an "incongruous interpretation that the average consumer simply will not reach." The Board then concluded:

[B]ecause we have found that the declaration of Ms. Vianey Romo de Vivar shows that one meaning that BAJATUSEGURO.COM would have to consumers is DOWNLOAD YOUR INSURANCE, and because the Office has not shown that this meaning is merely descriptive, this incongruous second meaning qualifies BAJATUSEGURO.COM as a double entendre, such that it is not merely descriptive of the identified services

The Board therefore reversed the Section 2(e)(1) refusal and the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: The Board noted that a different result might ensue in an inter partes proceeding that included evidence of the descriptiveness of "download your insurance."

Text Copyright John L. Welch 2016.

Electric Skillet Configuration Lacks Acquired Distinctiveness, Says TTAB

It was a tough week for National Presto Industries. First, the Board pulled the plug on its popcorn popper configuration mark, and yesterday its electronic skillet configuration mark was short-circuited. The Board affirmed a refusal to register the configuration shown below, for "electric skillets," finding that Preston's proof of acquired distinctiveness under Section 2(f) was inadequate. In re National Presto Industries, Inc., Serial No. 85883551 (April 19, 2016) [not precedential].

The mark comprises the curved handles of the skillet, not the metal base or the glass lid or the knob (which are shown all in dashed lines).

Of course, under Wal-Mart, product configurations cannot be inherently distinctive, so Presto resorted to Section 2(f), relying on its use of the "mark" since 2005, sales of more than $65 million, more that $5million in advertising expenditures, and distribution of some 80,000 product catalogs.

The Board observed that sales figures showing commercial success of the product are not probative of purchaser recognition of the product's configuration as a source indicator. The critical question is whether the product design is being used and advertised in such a way that consumers "associate the product design with a particular applicant, and therefore view the product as emanating from a single source." So-called "look-for" advertising may be particularly probative.

Here, there was no evidence of "look-for" advertising. Although Presto's skillet has been actively promoted and sales have been significant, there was little evidence that consumers recognize the shape of the combination leg/handle of the skillet as a source indicator. While the advertising displays the skillet and touts a few features of the product, there was no attempt by Presto to draw attention to the leg/handle design as a trademark. Self-serving statements by Presto's Secretary and General Counsel regarding the purported wide association of the design with Presto were not corroborated by any evidence.

The Board therefore affirmed the refusal to register under Section 1, 2, and 45 of the Trademark Act on the ground that the applied-for mark is a non-distinctive product design that has not achieved acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: During prosecution, the examining attorney withdrew a Section 2(e))(5) functionality refusal.

Text Copyright John L. Welch 2016.

USPTO Files Petition for Writ of Certiorari in THE SLANTS Case

The USPTO today filed a petition for a writ of certiorari (here) to the U.S. Court of Appeals for the Federal Circuit, seeking Supreme Court review of the CAFC's decision in In re Tam 117 USPQ2d 1001 (Fed. Cir. 2016), deeming the disparagement provision of Lanham Act 2(a) unconstitutional as a violation of the Free Speech Clause of the First Amendment.

The question presented is as follows:

Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Are Olive Oil and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused registration of the mark MORO in the design form shown below left, for "olive oil," finding the mark likely to cause confusion with the registered marks MORO in standard characters and MORO RESTAURANT & Design (below right) for "restaurant and catering services." The Board noted that there is no per se rule dictating a likelihood of confusion between a mark for food items and a similar mark for restaurant services Something more must be shown. How do you think this came out? In re Conga Foods Pty Ltd., Serial No. 86261786 (April 8, 2016) [not precedential].

The Board focused on the cited standard character mark MORO. It noted that "something more" has been found when "the mark for restaurant service made clear that the restaurant specialized in the identified food goods" (E.g., COLOMBIANO COFFEE HOUSE and COLUMBIAN for coffee). Or when the restaurant's wines were actually sold in applicant's restaurant (OPUS ONE for wines confusable with the identical mark for restaurant services). Or when the mark was a "very unique, strong mark" (MUCKY DUCK for mustard confusable with MUCKY DUCK for restaurant services).

The examining attorney submitted evidence of third-party registration and use of a single mark for both edible oils and restaurant services. The Board found the evidence relevant, but it did not show "that the goods and services originate from the same source or that there is an association or connection between the sources of the goods and services." [Not clear why not - ed.].

The cited mark does not indicate that registrant specializes in olive oil as a type of food. The fact that olive oil may be an ingredient in some of the items on Registrant's menu is not enough, by itself, to support a Section 2(d) refusal. "That is, use of a term referring to an ingredient in some dishes does not carry the same weight as use of a term referring to an entire type of food, such as Mexican food, or to a complete product, like pancakes or coffee." (The Board noted that the result here might have been different if registrant specialized in olive-based cuisine.)

As to the strength of the cited mark, the Board did not find MORO to be a "very unique, strong mark," or "unique and memorable."

Finally, there was no evidence that registrant sells applicant's olive oil in its restaurants or via its catering services.

The Board concluded that the USPTO had failed to prove the "something more" required to support the refusal, and so it reversed.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2016.

Divided Board Panel Affirms Single-Book-Title Refusal of NO EXCUSES DIET

A divided panel of the Board affirmed a refusal to register the mark NO EXCUSES DIET for "books in the field of food in health and wellness," on the ground that the phrase does not function as a trademark because it is merely the title of a single book. Judge Adlin dissented, finding that as a result of applicant's "association creating activities under the marks NO EXCUSES and THE NO EXCUSES DIET," these marks identify a set of literary and other works on the same subject." In re Jonathan Roche Fitness Ventures LLC, Serial No. 85981686 (April 15, 2015) [nor precedential].

Judge Kuczma, writing for the panel majority, observed that the title of a single book "describes the book, and is not associated in the public mind with the publisher, printer of bookseller." However, if the title identifies a series of works, it performs a trademark function and is registrable.

Reviewing applicant's specimen of use and its submitted evidence, the majority found it clear the proposed mark "only identifies the title of a single book." The additional evidence submitted by applicant comprised advertising for materials in its book, including workouts, articles and other items available at applicant's website or on YouTube, made available on the same webpage that offers the book. That use, the majority found, does not constitute use of NO EXCUSES DIET as a trademark for books (though it may be service mark use).

Given the identification of goods - i.e., books - the panel majority affirmed the refusal.

Dissent: Judge Adlin called the majority's conception of "book," "titles," and "series" as too narrow. He would find that THE NO EXCUSES DIET (sic!) is associated in the public mind with the book's source. It is not required that the works in a series all be in the same format, or that the marks be used without any variation.

Although applicant offers only one book under the title NO EXCUSES DIET, that is not its only use of the mark (or closely related marks). The ancillary materials referencing the book, in combination, form a "system or process to 'crank up your energy fitness and weight loss.'" The evidence supports a finding that NO EXCUSES is in fact applicant's "primary mark" (DIET being disclaimed).

Judge Adlin concluded that applicant is engaged in a number of "association creating activities" under the marks NO EXCUSES and THE NO EXCUSES DIET, and as a result "those marks identify a set of works on the same subject, namely, nutrition, health and wellness."

Read comments and post your comment here.

TTABlog comment: Perhaps applicant should have identified the goods as printed publications rather than books.

Text Copyright John L. Welch 2016.

TTAB Affirms Functionality Refusal of Popcorn Popper Configuration

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below as a trademark for "electric popcorn poppers," finding the design to be de jure functional. The Board also affirmed the PTO's alternative refusal, finding that the configuration lacks acquired distinctiveness under Section 2(f). In re National Presto Industries, Inc., Serial No. 85870582 (April 15, 2016) [not precedential].

The Board once again applied the Morton-Norwich factors in determining functionality:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Patents: The Board reviewed several relevant utility and design patents owned by applicant, noting that a design patent "may be some evidence of non-functionality," but may be "outweighed by other evidence supporting a functionality determination."

Here, the product’s form is dictated by its function. If we compare the operating instructions for Applicant’s subject hot air corn popper (shown below, on the left),with one of the embodiments of Applicant’s ‘974 utility patent ... we see how the popper’s utilitarian features dictate its design.

The Board concluded that the applied-for mark merely "combine[s] the popper’s fundamentally functional features with minor variations that do not detract from—and may even add to—its overall functionality." The translucent cover deflects the popped popcorn into the bowl, and allows the user to watch the corn as it pops. The widening discharge chute "reduces the risk that popped corn would jam as it is discharged from the popper." The generally cylindrical base with a skirt on the bottom increases the popper's stability.

In sum, the applied-for design, "even with its insignificant variations, is, taken as a whole, functional."

Advertising: Applicant's advertising states that the "chute directs popcorn right into your bowl," confirming the functional purpose of the chute and its shape.

Alternative Designs: Applicant maintained that there are numerous functionally-equivalent designs that look different (See below).

The Board, however, found that these four competitors' designs "all follow the same functional pattern—directing a stream of hot air upward, carrying popped kernels of corn up to a transparent or translucent cover that redirects them to a waiting receptacle. Their commonalities, which are covered by the drawing and description of Applicant’s proposed mark, outweigh their differences."

Even thought applicant's utility patent has expired, applicant could, if granted a trademark registration for this design, claim an exclusive right potentially in perpetuity, which would constitute a hindrance to competition.

Many functionally equivalent designs, which necessarily would share many of the functional features of Applicant’s design, would at least arguably resemble Applicant’s design to some extent. Competitors "would not know if the features which they are using in their products, whose overall configurations are not dissimilar from that of the applicant, subject them to a suit for trademark infringement."

Cost and Ease of Manufacture:The fourth Morton-Norwich factor (lesser cost or ease of manufacture) was neutral.

Taking the evidence as a whole, the Board found the applied-for design to be functional, and so it affirmed the Section 2(e)(5) refusal.

Acquired Distinctiveness: Turning to the alternative refusal, the Board pointed out that under Wal-Mart, a product configuration cannot be inherently distinctive for purposes of trademark registration. An applicant who seeks to register a product design via Section 2(f) faces a "heavy burden."

Applicant's use of the proposed mark for more than thirteen years was alone insufficient to establish acquired distinctiveness. Moreover, the probative value of long use is "vitiated" where the use is not substantially exclusive.

Applicant complained that one of the competitive designs cited by Examining Attorney Curtis W. French is a knock-off of its design, but "[c]opying is only evidence of secondary meaning if the defendant's intent in copying is to confuse consumers and pass off his product as the plaintiff's." In any case, “it is more common that competitors copy product designs for desirable qualities or features."

Applicant pointed to is more than $77 million in sales, but the Board observed that sales figures merely demonstrate the popularity of the product; they do not show that the consuming public recognizes the product shape as a source indicator. Applicant also pointed to 6 million dollars in advertising expenditures, but nothing in the advertisements promoted the configuration of the product as an indicator of source.

At bottom, the critical question is not the length of Applicant’s use, the dollar amount of its sales, or the extent of its advertising; it is the effectiveness of these efforts in “creating a consumer association between the product configuration and the producer.” In re Ennco Display Systems, 56 USPQ2d at 1285. The record in this case does not reveal that the claimed product features have acquired distinctiveness under Section 2(f) of the Trademark Act.

And so the Board affirmed the alternative refusal of non-distinctiveness.

Read comments and post your comment here.

TTABlog comment: The Board is really, really tough on product shapes: witness last week's trigger guard case and many others over the life of this blog.

How about a popcorn popper shaped like a duck? I think that may be melted butter coming out of the duck's beak. At least I hope so.

Text Copyright John L. Welch 2016.

Not So Fast On MARATHON MONDAY: The BAA, the TTAB, and Lanham Act Section 2(a)

Today is Marathon Monday, at least in New England. Remember the recent TTAB case involving the mark MARATHON MONDAY? Here is a link to a recent article about that case, by J.C. Zwisler and yours truly, from the Spring 2016 issue of the Boston Bar Journal. Well, the subject line of this post does not exactly match the title of the article, but it's close enough.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

USPTO Seeks Applications for TTAB Administrative Trademark Judge

The USPTO is seeking applications for the position of Administrative Trademark Judge at the TTAB. Applications must be submitted by April 29, 2016. The detailed announcement may be found here.

Duties

The judges of the Trademark Trial and Appeal Board (TTAB) are responsible for hearing and deciding adversary proceedings involving oppositions to applications, petitions to cancel registrations, and concurrent use proceedings; and for hearing and deciding appeals from final refusals by trademark examiners to allow the registration of trademarks. Each appeal and adversary proceeding shall be heard and decided by at least three judges of the TTAB.

Judges of the TTAB:

- Exercise original jurisdiction in inter partes proceedings in the Patent and Trademark Office arising under the Federal trademark registration statutes; for example, opposition to an application for registration, consideration of applications to register as lawful concurrent users, and petitions to cancel registrations. In these inter partes proceedings, judges serve in a capacity similar to that of a trial judge and work in conjunction with TTAB attorneys conducting interlocutory proceedings, for determining interlocutory motions, and for conducting final hearings on their merits after briefing and, in some cases, oral arguments of adverse parties.

- Exercise appellate jurisdiction in adjudicating ex parte appeals from refusal of the examiner of trademarks to register a trademark. Such appeals are decided on records created during examination and on the briefs and, if requested by the applicant, oral arguments.

- Evaluate the evidence, arguments, and citations to authority, presented in the foregoing contested trademark cases and appeals, and render written decisions which explain the reasoning and conclusion of the Patent and Trademark Office. These decisions are rendered in accordance with the conclusions reached in conference by a majority of the judges sitting for each case, as a panel of the Board. A judge may decide to author a dissenting opinion when the judge is not in agreement with the majority opinion.

The proceedings must be conducted with imagination, discernment, and ingenuity for the purpose of detecting any improper practices or attempts to secure unjustified advantages and otherwise to preserve the legal, equitable, and procedural rights of the parties and ensure fair and expeditious conduct of the proceedings and final determination on the merits. The proofs presented by the parties, as well as their briefs and oral arguments, may involve voluminous testimony, documentary and physical exhibits, and other evidentiary material which must be analyzed and appraised in accordance with the established rules of evidence, to ascertain admissibility, weight, sufficiency, and pertinency to the issues. The judges’ findings in these particulars are incorporated into final decisions in accordance with sound legal principles and precepts. The preparation of such decisions requires outstanding skill in analytical techniques and in clear, comprehensive, and effective applications of legal logic, in addition to a thorough knowledge of, and application of, the common and statutory trademark laws, the rules of evidence, and general principles of related and ancillary legal subjects.

While serving in the capacity of judge, the incumbent must conduct herself/himself with deportment of the highest order to ensure and maintain the dignity of the TTAB. Board judges must command the respect of the practicing attorneys and others with whom they come in contact because of their positions on the TTAB. The decisions of the TTAB are final in the Executive Branch and are subject to review, through appeal, only by the U.S. Court of Appeals for the Federal Circuit or by civil action in a U.S. District Court.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

GUMMY BITES Deceptively Misdescriptive of Dog Treats, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark GUMMY BITES, finding it deceptively misdescriptive of "dog treats, namely, treats that are a soft solid without having the attribute of being a gum or chewy substance that require mild to moderate forces to masticate a few times before breaking apart, being ground down and being swallowed." Although the product has not yet been formulated, applicant stated that it "will not be a traditional gummy product." In re Green Bark Gummies, Inc., Serial No. 86283461 (April 8, 2016) [not precedential].

The examining attorney relied on dictionary definitions of GUMMY and BITES, on third-party use of these terms in connection with dog treats and dog nutrition items, and on third-party registrations showing the descriptiveness of the individual words. The Board noted that applicant disclaimed GUMMIES in its registered mark GREEN BARK GUMMIES for dog treats.

The Board concluded that GUMMY BITES immediately describes characteristics of dog treats. A consumer would understand the mark to mean that the product is a gummy, bite-sized treat. The identification of goods alone shows that applicant's product is not "gummy." And so the PTO established the first prong of the deceptive misdescriptiveness test: the mark misdescribes the goods.

Moreover, as to the second prong of the test, customers are likely to believe the misrepresentation. The evidence showed that dog treats may be "gummy" and are so describde by consumers and the industry. And "bites" is a common term to describe the size of dog treats.

Applicant asserted that the list of ingredients (as yet unformulated) would disabuse the consumer of any false understanding, but the Board pointed out that a consumer would have to comb through the list and have knowledge of the chemical properties of each ingredient. That is not the proper approach. In short, a consumer upon seeing the mark GUMMY BITES would likely believe that those bites have a gummy characteristic.

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Seems like a Section 2(a) deceptiveness refusal would apply as well. The belief that the product is "gummy" might well be a material factor in the decision to purchase.

Text Copyright John L. Welch 2016.

TTAB Deems COPPER-TEN Deceptive for Steel Painted to Simulate Copper

The Board affirmed a Section 2(a) refusal of the mark COPPER-TEN, finding it to be deceptive for "prepainted coated sheet steel, namely, coated sheet steel painted to simulate naturally weathered copper." Applicant argued that the mark accurately describes the visual appearance of the goods, and therefore that consumers would not be deceived, particularly in light of applicant's family of marks: GALV-TEN, COR-TEN AZP, and DUAL-TEN for other steel products. In re United States Steel Corporation, Serial No. 86174180 (April 8, 2016) [not precedential].

A mark is deceptive under Section 2(a) if (1) it misdescribes the goods, (2) prospective purchasers would believe the misdescription, and (3) the misdescription is likely to affect the purchasing decision of a significant portion of relevant consumers. Moreover, a mark is deceptive even if only a portion of the mark is deceptive.

Applicant maintained that purchasers would not understand the term COPPER to indicate that the material contains copper. The Board, however, swiftly rejected the "family of marks" argument, failing to see how this supposed family would "transform an unregistrable mark into a source indicator." In any case, there was no proof that applicant used its marks in such a way as to create a family of marks. [Even if a family of marks existed, what if tomorrow applicant abandoned the other marks in the family? - ed.].

Applicant also pointed to its advertising, which explained the nature of the goods. The Board noted, however, that the mark must stand on its own. [As with the family argument, applicant could change its advertising tomorrow - ed.].

The Board concluded that the first prong of the Section 2(a) deceptiveness test was satisfied.

Because copper is a common feature or ingredient of building materials, consumers are likely to mistakenly believe that the involved goods are made of copper. And so the second prong was satisfied. Applicant's assertion that the customers for the goods are sophisticated was unpersuasive. The identification of goods encompassea materials that may be purchased by do-it-yourself consumers and handymen at a building supply store like Home Depot of Lowe's. And there was no direct evidence to support the claim that consumers are not likely to be deceived.

Finally, genuine copper is commonly used and highly desirable for building materials. Thus the misdescription of the mark would be a material factor in the consumer's purchasing decision.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If a contractor told me she was going to use COPPER-TEN on the roof of my shed, I'd think it was copper and that "TEN" meant something about the thickness. I qualify as the least sophisticated consumer of building supplies, and also as a "do-it-yourselfer," because that's what I say when ordered to perform certain household chores.

Text Copyright John L. Welch 2016.

TTAB Finds Trigger Guard Configuration Functional Under Section 2(e)(5)

The Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below, finding the mark to be de jure functional for "“gun parts, namely, bottom metal for custom guns that incorporates a trigger guard shape." The Board also considered, in the alternative, applicant's evidence of acquired distinctiveness under Section 2(f) and found it inadequate. In re William D. Hober, Inc., Serial No. 85643266 (April 7, 2016) [not precedential].[Affirmed per curiam, Fed. Cir. August 21, 2017].

The description of the mark limited its scope to certain curves and surfaces of the trigger guard, and applicant argued that although trigger guards provide a function [i.e., are de facto functional - ed.] that does not mean that a particular design for a trigger guard is functional in a trademark sense [i.e., de jure functional].

Examining Attorney Dominic R. Fathy argued that the oval shape is a superior design for a trigger guard, and that applicant's design is an "indiscernible variation of a fundamental oval trigger guard design that functions to protect against accidental discharge of a firearm."

The Board applied the Morton-Norwich factors to determine the Section 2(e)(5) issue. Three of the four factors were neutral: applicant does not own a patent covering its trigger guard, there was no evidence that it touted the utility of the design, and applicant's design was not comparatively simple or cheaper to manufacture.

The fourth factor, the availability of alternative designs, was critical. The Board noted that just because alternative designs are available, an applicant's design may still be functional. If a design "is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered."

The examining attorney asserted that applicant's design comprises an "Oberndorf style" trigger guard (shown immediately below), a basic, common shape for a trigger guard. He explained that the shape of applicant's guard "distributes stress over a broader area to effectively make the guard more durable," and is flat at the top where it meets the gun. The concave and convex surfaces "appear to be virtually universal in the firearm industry, especially in Oberndorf guards."

The Board found nothing in applicant's description of the mark "that elevates the functional design or shape of applicant's trigger guard into a non-functional source indicator; rather applicant's trigger guard has its shape because the trigger guard works better in this shape."

Given that it is beyond debate that the basic oval or loop shape of a trigger guard is functional, Applicant’s proposed mark describes a very narrow range of features that it claims to be non-functional. The inclusion of a few arbitrary features in the design (e.g., the radii of the curved portions) does not appreciably detract from the overall functionality of the design as a whole. See In re Becton, Dickinson and Co., 102 USPQ2d at 1376 (where a mark is composed of functional and non-functional features, whether an overall design is functional should be based on the superiority of the design as a whole, rather than on whether each design feature is useful or serves a utilitarian purpose).

The evidence showed that applicant's design is "one of a few superior designs." The fact that the design may give a gun a unique, custom look does not necessarily mean that the design is not functional.

The Board therefore affirmed the Section 2(e)(5) refusal.

Assuming arguendo that the design was not de jure functional, the Board considered applicant's claim of acquired distinctiveness under Section 2(f). The evidence included declarations from the owner of applicant's president and of the designer of the trigger guard, as well as "form" declarations from 35 gunsmiths, custom gun purchasers, and gun industry professionals. However, the Board found that the evidence fell short of establishing acquired distinctiveness.

The declarations of the president and the designer were self-serving, and the 35 customer declarations never explained why the design is "distinctive" and "recognizable," nor did they refer to the specific elements of the proposed mark as described in the application. Although the design has been in use since 1964, the widespread use of the Oberndorf trigger guards is inconsistent with a claim of substantial exclusivity. Moreover, evidence of sales revenues and advertising expenditures was lacking, and there was no evidence of "look-for" promotional language in applicant's advertising.

The Board therefore rejected applicant's Section 2(f) claim.

Read comments and post your comment here.

TTABlog comment: Well, applicant here may not have a trademark, but can it still bring a Section 43(a) claim against competitors, in light of the Fourth Circuit's FLANAX ruling that the Lanham Act "does not require a plaintiff possess or have used a trademark” in order to sue under the statute’s Section 43(a)?

Text Copyright John L. Welch 2016.

Precedential No. 11: TTAB Clarifies Timing of Fame Requirement for Dilution Claim

The Board denied Applicant Alpha Phi Omega's motion for summary judgment aimed at Opposer Omega SA's likelihood of confusion and dilution-by-blurring claims, finding that genuine issues of material fact existed regarding the similarity of applicant's mark AΦΩ and various registered  OMEGA marks of opposer, and regarding the date when applicant's first used the AΦΩ mark. However, The Board entered summary judgment regarding applicant's mark shown below (the Crest Mark) on the ground that the involved marks are too dissimilar to support opposer's Section 2(d) claims. Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289 (TTAB 2016) [precedential].

Applicant sought to register its marks for jewelry and clothing. Opposer asserted rights in its OMEGA marks, shown below, for watches, clothing, and retail store services featuring watches and jewelry.

Likelihood of Confusion: The Board quickly disposed of the motion for summary judgment vis-a-vis the likelihood of confusion claims. It found the dissimilarities between applicant's Crest Mark and opposer's pleaded marks to be dispositive. As to applicant's AΦΩ mark, however, the Board denied the motion because genuine issues of material fact existed regarding the similarity of the involved marks and the relatedness of the goods and services.

Dilution: A party asserting a dilution claim must allege that its mark became famous prior to the date of first use of the challenged. mark. The Board confirmed that, when challenging a use-based application, the dilution claimant must  prove fame prior to the defendant's first use of its mark. If the applicant fails to establish when it first used its mark in commerce, then opposer need only prove fame prior to applicant's constructive use date - i.e., its filing date.

The next issue was more difficult:

Whether a plaintiff, in order to prove a dilution claim under the Trademark Act in a Board proceeding where defendant’s application/registration is based on use in commerce, must establish that its mark became famous prior to the defendant’s use of its subject mark in commerce as to any goods or services or whether plaintiff must establish that its mark became famous prior to defendant’s use of its subject mark in commerce in connection with the goods and/or services specifically identified in defendant’s subject application or registration.

The Board took the broader view, ruling that a dilution-by-blurring claimant must prove that its mark became famous "prior to any established, continuous use of the defendant's involved mark as a trademark or trade name, and not merely prior to use in association with the specific identified goods or services set forth in a defendant's subject application or registration." The Board noted that other courts have agreed with this approach, including the CAFC in Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003).

Turning to the merits of opposer's dilution claims, the Board focused on the first four factors of Section 43(c)(1) of the Lanham Act.

As to applicant's Crest Mark, the Board found no genuine dispute as to the lack of similarity between the involved marks, applicant's intent, and the associated between applicant's mark and the allegedly famous marks. The word OMEGA is found only within the banner at the bottom of the Crest Mark, and there was no evidence that a substantial percentage of consumers would focus on the "Omega" element alone and thereby associate the mark with opposer. There was no evidence that applicant intended to create such an association, and there was no evidence of the existence of an actual association. The Board therefore concluded that applicant's Crest Mark "will not impair any assumed distinctiveness of opposer's assumedly famous OMEGA marks." The Board therefore granted the motion for summary judgment as to this claim.

With regard to applicant's AΦΩ mark, the Board found that genuine disputes of material fact exist as to (1) whether the involved marks are sufficiently similar that applicant's mark "conjures up an association" with opposer's mark, and as to (2) when applicant first used the AΦΩ mark in interstate commerce, whether as a trade name for a fraternal organization or as a trademark for any goods.

Therefore, the Board denied opposer's summary judgment motion regarding this dilution-by-blurring claim.

Read comments and post your comment here.

TTABlog comment: Alpha Phi Omega was reportedly founded in 1925. Omega SA claims first use of at least one of its marks in 1894. Let's watch this one.

Text Copyright John L. Welch 2016.

Precedential No. 10: TTAB Grants Leave to Prepare and Serve Sur-Rebuttal Expert Report

In this Section 2(d) opposition, the Board granted Opposer Newegg’s motion for leave to prepare and serve a sur-rebuttal expert report. The Board refused to read FRCP 26(a)(2)(D) as prohibiting sur-rebuttal reports, concluding that, in light of the two conflicting expert surveys, allowing a sur-rebuttal report to analyze and critique applicant’s rebuttal survey would “benefit the Board in its ability to make a just determination of the merits of this case." Newegg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242 (TTAB 2016) [precedential].

Opposer’s expert, Dr. Kaplan, conducted a survey on the issue of likelihood of confusion between opposer’s NEWEGG marks and applicant’s EGGHEAD marks. Applicant’s expert, Dr. Ericksen, conducted a likelihood of confusion survey employing a different method. Opposer then filed its motion seeking permission to prepare and serve a sur-rebuttal report to be prepared by Dr. Kaplan.

FRCP 26(a)(2)(D) provides, in pertinent part, that, absent a stipulation or court order, expert disclosures must be made “(ii) if the evidence is intended solely to contradict or rebut evidence on the same subject matter identified [in another party’s expert report], within 30 days after the other party’s disclosure.” Many courts “have ruled that this rule does not contemplate or permit sur-rebuttal expert disclosures. The Board, however, does not so read the Rule. “Instead, the Board finds that under appropriate circumstances, a sur-rebuttal expert report would be proper,” as long as the request for same is made promptly, as opposer did here.

Although Dr. Erickson's rebuttal expert report included new evidence in the form of a different survey conducted via a different methodology than opposer's survey, the rebuttal report was nonetheless proper rebuttal. ProMark Brands, Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1230 (TTAB 2015).

Under the particular circumstances of this case, i.e., the existence of two conflicting expert surveys, and based upon the Board’s interpretation of the Federal Rules of Civil Procedure, it would not only serve the interest of fairness but would benefit the Board in its ability to make a just determination of the merits of this case to allow Opposer to provide a sur-rebuttal by Dr. Kaplan ....

The Board ruled, however, that Dr. Kaplan's sur-rebuttal report must be limited to rebuttal and/or critique of "the methodology of the survey conducted by Dr. Erickson, as well as the analysis of the data resulting from the survey." Applicant was allowed to depose Dr. Kaplan again, but limited to the subject matter of the sur-rebuttal report.

The Board order the proceeding resumed and set new trial dates.

Read comments and post your comment here.

TTABlog comment: Will expert testimony be employed more frequently in TTAB proceedings after the B&B v Hargis?

Text Copyright John L. Welch 2016.

Precedential No. 9: Use by Parent Company Does Not Save Subsidiary's Registered Mark from Abandonment

The Board granted a petition for cancellation of a registration for the mark NOBLE HOUSE for furniture, ruling that Respondent Floorco had abandoned the mark. The Board held that use of a wholly-owned subsidiary's registered mark by a parent entity does not inure to the benefit of the subsidiary when the parent controls the nature and quality of the goods. Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413 (TTAB 2016) [precedential].

Section 45 of the Trademark Act provides that a mark shall be deemed abandoned when its use has been discontinued with intent not to resume use. A period of three years of nonuse constitutes prima facie abandonment.

Here, the application underlying the challenged registration was filed under Section 1(b). Respondent Floorco filed its Statement of Use on August 18, 2011, claiming a first use date of December 3, 2010. The registration issued on November 1, 2011. The last sale of furniture under the NOBLE HOUSE mark was made on July 14, 2009, after which the products were "sporadically marketed," but without further sale.

Although sales ceased on July 14, 2009, the three-year period of nonuse for purposes of abandonment did not begin to run until the Statement of Use was filed, since an intent-to-use applicant "need not use its mark until it files its statement of use." Consolidated Cigar Corp. v. Rodriguez, 65 USPQ2d 1153, 1155 (TTAB 2002). The relevant period of nonuse, then, began on August 18, 2011. The evidence of subsequent nonuse established a prima facie case of abandonment.

Nonuse of a mark due to lack of demand may not constitute abandonment if the owner continues its marketing efforts. See, e.g., American Lava Corp. v. Multronics, Inc., 461 F.2d 836, 174 USPQ 107, 110-11 (CCPA 1972); Daybrook-Ottawa Corp. v. F.A.B. Manufacturing Co., 152 USPQ 441 (TTAB 1966). Respondent asserted that it had been marketing and advertising NOBLE HOUSE brand furniture as available for sale.

However, it was not Floorco that was marketing and advertising the products, but its parent corporation, Furnco. Moreover, the latter controlled the nature and quality of the furniture that may have been sold under the NOBLE HOUSE mark prior to the period of nonuse.

Section 5 of the Trademark Act provides when a mark is used legitimately by related companies, that use shall inure to the benefit of the registrant or applicant for registration. Section 45 defines "related company" as follows: "The term 'related company' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods and services on or in connection with which the mark is used."

The Board noted that in most cases the affairs of a subsidiary are controlled by the parent, and so no license or other agreement is needed regarding a mark owned by the parent and used by a subsidiary. A parent corporation "better fits the bill as the true owner" of the trademark. Here, however, Furnco authorized its subsidiary, Floorco, to be the owner of the registration. But parent Furnco did not meet the definition of a related company - i.e., an entity whose use of the mark is controlled by the registrant with respect to the nature and quality of the goods.

Accordingly, the advertising and marketing materials that identify Furnco International Corporation as the source of the NOBLE HOUSE furniture products cannot be deemed use of the mark by Respondent and cannot show that Respondent intended to resume use of the NOBLE HOUSE mark.

Therefore, the Board found that Respondent Floorco abandoned the mark NOBLE HOUSE by three years of nonuse with no intent to resume use.

Fraud: Petitioner also alleged that Floorco committed fraud on the USPTO when it submitted its specimen of use. The Board dismissed the claim because Floorco did not willfully make a material misrepresentation: it held the mistaken belief that, "whatever the legal significance of the parent's activities, they inured to Respondent's benefit." In short respondent did not intend to deceive the USPTO.

Read comments and post your comment here.

TTABlog comment: So, Floorco's mistaken reliance on Furnco's promotional materials was not Fraudco.

Text Copyright John L. Welch 2016.

USPTO Proposes Major TTAB Rule Changes

On Monday, April 4th, the USPTO published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 [pdf here]. The proposed changes are many and significant. Comments must be received by the USPTO by June 3, 2016, preferably submitted electronically to TTABFRNotices at uspto.gov, or submit comments at the Federal Register website, here.

Among the proposed rule changes are the following (for a more elegant and comprehensive summary, go here):

• A requirement that all filings in TTAB proceedings be made via ESTTA.
• A shift of responsibility to the TTAB to serve notices of opposition and petitions for cancellation.
• A requirement that service of papers between parties be effected by email.
• Consequent deletion of the 5-days-for-mailing extended response period.
• Limitation of document requests and admission requests to 75 each.
• Requirement that all discovery be completed by the close of the discovery period.
• Option to submit testimony by declaration or affidavit, subject to cross-examination.

This summary touches only some of the high points, and readers will want to read the entire 29 page document.

Read comments and post your comment here.

TTABlog comment: This is the first set of major rule changes since 2007.

Text Copyright John L. Welch 2016.

Precedential No. 8: TTAB Grants Pre-Trial Motion Limiting Goods in Opposed Application

In this consolidated opposition to registration of the mark SOYSALUD for various products in classes 29, 30, and 32, applicant filed a motion to amend its opposed Section 1(b) intent-to-use applications to limit the goods (various beverages) to soy-based products. Opposer based its opposition in part on Section 2(a) deceptiveness and Section 2(e)(1) deceptive misdescriptiveness, alleging that applicant's original identifications of goods included products that did not contain soy. Applying the framework set out in Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077 (TTAB 2013) [TTABlogged here], the Board granted the motion. Wisconsin Cheese Group, LLC v. Comercializadora de Lácteos y Derivados, S.A. de C.V., 118 USPQ2d 1262 (TTAB 2016) [precedential].

Rule 2.133 provides that "An application subject to an opposition may not be amended in substance ... except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board." The Board will usually defer a ruling on such a motion until final decision. However, under Stryker, the Board ruled that an unconsented motion may be granted before trial under the following circumstances:

1) the proposed amendment must serve to limit the broader identification of goods or services;
2) the applicant must consent to the entry of judgment on the grounds for opposition with respect to the broader identification of goods or services present at publication;
3) if the applicant wishes to avoid the possibility of a res judicata effect by the entry of judgment on the original identification, the applicant must make a prima facie showing that the proposed amendment serves to change the nature and character of the goods or services or restrict their channels of trade and customers so as to introduce a substantially different issue for trial; and
4) where required to support the basis of the subject application, any specimens of record must support the goods or services as amended; and the applicant must then introduce evidence during its testimony period to prove use of its mark with the remaining goods or services prior to the relevant date as determined by the application's filing basis.

Because the opposed applications are based on Section 1(b) intent-to-use, the fourth Stryker requirement was inapplicable. Moreover, the first requirement was also obviously satisfied.

As to the second, applicant unconditionally consented to judgment as to the Sections 2(a) and 2(e)(1) claims with respect to the broader identifications of goods for which the applications were published.

As to the third Stryker requirement, applicant made a prima facie showing that the proposed amendments "serve to change the nature and character of the goods so as to introduce a substantially different issue for trial with respect to the Sections 2(a) and 2(e)(1) claims."

Indeed, Applicant has deleted all goods that, as published, were not identified as “soy-based” or containing soy, and has amended the remaining goods to specifically state that they are“soy-based.” Opposer limited its Sections 2(a) and 2(e)(1) claims to Applicant’s goods that were not identified as “soy-based” or containing soy. The amended identifications of goods no longer include non-soy goods to serve as the bases for Opposer’s Section 2(a) and Section 2(e)(1)claims against the non-soy goods.

The Board therefore granted the motion to amend and entered judgment in favor of Opposer as to its Section 2(a) and Section 2(e)(1) claims with respect to all goods encompassed by Applicant’s broader identifications of goods, except for the remaining soy-based goods. Opposer was allowed thirty days to file amended notices of opposition, to each of which applicant would then file its answer.

Read comments and post your comment here.

TTABlog comment: This opinion/decision includes a mundane consolidation motion that was not worth discussing.

Text Copyright John L. Welch 2016.

Precedential No. 7: Lack of Exclusive Use Dooms “AYOUB” 2(f) Surname Application

The Board sustained a rare Section 2(e)(4) opposition to registration of the mark AYOUB for “retail carpeting and rug stores” and “carpet and rug cleaning services,” finding that applicant failed to satisfy the requirement of Section 2(f) that the use of its mark be “substantially exclusive.” Ayoub, Inc. and Ayoub Supply LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392 (TTAB 2016) [precedential].

In response to a Section 2(e)(4) surname refusal, applicant amended the subject application to seek registration under Section 2(f), claiming “substantially exclusive and continuous use” of the mark for at least the immediately preceding five years. The only issue in this opposition was whether AYOUB had acquired distinctiveness under Section 2(f). Applicant had the ultimate burden of persuasion on the issue. Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1010, 6 USPQ2d 1001, 1010 (Fed. Cir. 1989).

Opposers pointed to the use of the identical surname by themselves and by various third parties, for identical or related services. Opposers’ own use of the surname Ayoub from 1996 to 2015 was “not insubstantial.” Testimonial and documentary evidence established the use of Ayoub by third-parties in the same or similar business as applicant. Applicant essentially admitted that its use of Ayoub was not substantially exclusive when it stated at its website:

Ayoub Carpet Service is NOT affiliated with any other Ayoub. *** Some of you might be confused of (sic) the various “Ayoub” entities serving the Washington DC metro area in the cleaning and flooring business. Although we are all related and do a good job, we each run our businesses separately and uniquely apart from one another.

Applicant provided evidence that it objected on at least five occasions to use of “Ayoub” by Opposers and third parties. However, all of those entities were using “Ayoub” during the time period for which applicant claimed exclusive use, and all but one continued to do so after objection. The Board concluded that “the public has been exposed to many uses incorporating the name Ayoub in connection with carpet and rug cleaning and repair businesses.”

The Board noted that “absolute exclusivity” is not required to satisfy Section 2(f) - see L.D. Kitchler Co. v. Davoli, Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999) – but “the widespread use of the surname Ayoub by unaffiliated rug, carpet and flooring businesses is inconsistent with Applicant’s claim of acquired distinctiveness of AYOUB. Indeed, the proliferation of such uses clearly shows that Applicant’s use is not ‘substantially exclusive.” See, e.g., Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984); Quaker State Oil Reining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); Miller v. Miller, 105 USPQ2d 1615, 1624-25 (TTAB 2013).

Concluding that applicant failed to establish acquired distinctiveness, the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: The Board thus pulled the rug out from under ....

Text Copyright John L. Welch 2016.